Expert's Opinion

Keeping Up with Trademark Issues

By Bobby Ghajar and Nina Hernandez, Howrey LLP | July 6, 2010

Bobby Ghajar and Nina Hernandez look at the issues surrounding Kim Kardashian's new fragrance bottle.

From tailored suits to age-defying moisturizers, consumers believe they are getting the crème de la crème when they see the interlocking Cs that symbolize the elegance and grace of Coco Chanel’s designs and products. That powerful symbolism underscores the importance of trademark protection.

The recent controversy over Kim Kardashian’s logo for her new perfume provides an opportunity to look at some of the trademark issues faced by beauty product companies.

Lindley Bertin, owner of Korcula jewelry, has accused Kim Kardashian of using Korcula’s trademarked “double K” design. Ms. Bertin has reportedly hired an attorney to help her protect her trademark. What would she need to prove?

She would first have to show that she has prior ownership of a valid mark or a trademark registration for her design, and that consumers are likely, out of confusion, to link her product to Ms. Kardashian’s, or vice-versa.Her lawyers would then probably argue a theory of trademark infringement called “reverse confusion,” where a smaller company’s name is drowned out by a larger newcomer’s more popular product that bears the same or similar name.In these cases, the fear is that the trademark owner looks like the copycat, and its brand becomes associated with the larger newcomer.

Courts look at a number of factors to determine whether there is a likelihood of confusion, including, among other things:

• How unique and recognizable the trademark is to the relevant customers;
• How similar the trademarks are in terms of sight, sound, and meaning;
• How closely related the products are;
• Evidence that consumers have actually been confused;
• Whether the companies market their products in the same channels;
• Consumer purchasing care or sophistication;
• Whether the defendant intended to copy the trademark; and
• The likelihood the parties would expand into each others’ areas.

Trademark issues are extremely complex, and it takes true expertise to navigate the process, identify potential problems, and address any legal complications. As one beauty products owner who saw her company’s brand overwhelmed by a celebrity soundalike put it, “From the beginning, from the time you file for a trademark, you need to be represented by a firm capable of handling any problems that might arise. It’s worth whatever it costs. And if you do run into a problem, make sure you bring in an experienced litigator right away.”

About the Author
Bobby Ghajar's practice runs the gamut of trademark and copyright law. He has handled dozens of high-stakes litigation matters for Fortune 500 and small companies alike in cases involving trademark, trade dress and copyright infringement, dilution, anti-counterfeiting, false advertising and right of publicity claims.

He brings unique experience in international trademark matters, having managed litigations in dozens of countries, filed hundreds of trademark applications for his clients and settled various multi-jurisdictional disputes. His internet practice involves securing and reclaiming domain names and pursuing Internet-based fraud and infringement through negotiations, UDRP proceedings or litigation.

Related End-User Markets: